Washington Redskins won’t be shut out by trademark decision

The National Football League has coach’s challenges. When a call doesn’t go his way, a coach can toss out a red beanbag and ask the referee to go under the hood and review a call that was made on the field, hoping for a reversal. In the legal world, of course, we have a similar procedure. We call them appeals rather than challenges, but the goal is the same – one party wants a judgment reversed. In regards to the recent cancellation of the Redskins trademark by the United States Patent and Trademark Office (USPTO), team owner Daniel Snyder certainly would like to toss the red beanbag.

Of course, when a coach knows that a call went his way in a previous game, he can be more confident that he’ll get a satisfying judgment on a subsequent play. This should bring some assurance to Redskins owner Daniel Snyder, because this whole case almost seems like a highlight reel from a previous season.

“The trademark was previously voided and that was overturned,” explains Brad Newberg, a partner at Reed Smith LLP. “The Trial and Trademark Appeal Board (TTAB) heard the exact same issue… what happened here was the District Court overturned the TTAB.”

The previous case was overturned on two grounds. First, there was a laches argument, stating that the case had no standing, since the individuals who brought the case were far older than 18 and could have brought the suit much earlier. This became the focus of later appeals, and ultimately played a big part in the dismissal of the original case

Now, though, the individuals who brought the case to the TTAB are far younger, so the laches argument is less likely to hold weight. That puts the spotlight on other matters that came up in the original case: whether there was enough evidence for the petitioners to win on merits.

The district court decided that whether or not the trademark was disparaging was not decided by a substantial argument. In order to cancel the trademark, it must be found to be disparaging to a substantial composite of the relevant group at the time it was issued. The petitioners used evidence from the National Congress of American Indians, which represents about 30 percent of American Indians. The group has been advocating against the use of the term Redskins since the 1960s, so that evidence is used to show that a substantial portion were disparaged by the term in the time period when the mark was granted.

This evidence was not sufficient in the original case, and may not be enough now. “This happens all the time… a notice of reliance,” explains Jim McCarthy of McDonnel Boehnen Hulbert & Berghoff LLP. “You get in front of the TTAB and rely on evidence from other proceedings, all of the evidence from the previous case supplemented with additional depositions. Though there is additional evidence at play, the dissenting opinion case says it was mostly the same evidence and it was not enough. The Redskins are likely to attack this on appeal.”

So, what is the impact of this ruling? McCarthy states that it is likely minimal, economically speaking, as common law rights will come into play. “Even if the marks are cancelled and upheld on appeal, trademark rights in the U.S. are based on commerce.” The team’s trademarks are used in every state, so trademark law will give strength to the mark based on the pervasiveness of its use.

Newberg feels that the biggest impact will be reputational. “This did not come at a good time for the team or Snyder,” he explains. “The TTAB itself tightened its opinion to make it less likely to be overturned, but media coverage and public opinion can come into play here. We like to think that judges operate in a vacuum and are not influenced by outside matters, but that is impossible to prevent 100 percent.”

McCarthy feels that this situation actually presents an opportunity for Snyder to make some positive headway in the court of public opinion. “Wouldn’t it make more sense if, instead of spending money on legal fees, the parties could spend money on issues facing the Native American community?” He cited the foundation the Redskins had set up, noting that it can take a strong sense of corporate social responsibility and use the money it makes to help solve real problems.

Big sports fans might wonder if this ruling could have any impact on other sports teams with American-Indian derived names (like the Cleveland Indians, Atlanta Braves or Kansas City Chiefs, for example). “It’s unlikely this ruling would affect those names,” explains Newberg, remarking that, compared to these other team nicknames, the term Redskins has a deeper history in terms of being disparaging, as the American Indian community has advocated harder about the racial connotations of Redskins as opposed to the other names.

As for the case at hand, the Redskins and the NFL are likely to appeal, so we’ll see if the trademark is indeed cancelled and what impact that will truly have.